Autumn cleanup time.
Interesting Patent Case
a two piece assembly the same as a unitary part?
This is the seventh issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and
ideas. We hope to stimulate you to examine and improve your own IP
practices. This month's issue addresses that difficult area, the
doctrine of equivalents. Feel free to share this newsletter (see copyright notice below)
and to provide feedback by e-mail to: email@example.com
Patent Strike ForceSM
Autumn cleanup time.
to pull out your leaf blowers and clean up the yard. And maybe time to
clean up your patent claims too. As you do so, you can think about an
on-going patent dispute between Toro and White Consolidated Industries.
In this suit Toro alleged that White infringed on its 1987 patent by
building a competing "convertible vacuum-blower." The problem
for Toro is that White's tool does not literally infringe any of Toro's
claims. As we know, the courts have long held that there is a doctrine
of "equivalents" under which patent protection is extended
to cover copies of an invention that include only unimportant and
insubstantial changes. Of course, that doctrine begs the question of
what is an unimportant or insubstantial change. In the present case, at
first blush, it would seem that Toro had a pretty good case; Toro
claimed a (air inlet) cover that included a restriction ring to increase
blower pressure and White had a separate cover and restriction ring.
you might say, dividing up a single part into two parts is
unimportant or insubstantial. Surprisingly, the District Court disagreed. It held that "a critical
function" of Toro's claimed cover was "to automatically insert
and remove the restriction ring", that clearly White's two piece apparatus
did not perform this function, and therefore White did not infringe. The
Appeals Court threw out this finding, pointing out that the actual
claim in question said nothing about function and only discussed the
structure of the invention. It (the Appeals Court) said a reasonable
jury might find that White's two part structure was an insubstantial
change from Toro's unitary structure and remanded the case back to the
District Court. Although the case is not decided, things are moving in
lessons can we draw from this case?. Should we get out our
vacuum-blowers and clean out all but structural claims from our patents?
Of course, there is no simple rule to follow and all discussions about
your claims should always be performed in coordination with your patent
attorney, but as always, you are the inventor and you, or someone like
TechRoadmap who has worked with you, has the responsibility to
communicate what is or is not important to protect in the claims. In doing so you
claims that are broader than "pictures" of your preferred
mode - Toro's unitary cover and restriction ring claim was
(apparently) unnecessarily restrictive.
functional/means claims in addition to structural claims - it is
easier to see the equivalence between two structures if they perform
the same, claimed function in substantially the same way.
"design-around" your own claims - and then add claims
your patent protection to cover those design-arounds!
in the preceding article should be construed as legal advice. TechRoadmap
Inc serves as an interface between companies and their legal counsel.
Is a two piece assembly the same as a
Company v. White Consolidated Industries
which owns US patent 4,694,528 for a "convertible
vacuum-blower" that is used alternatively to vacuum leaves and
small debris or to disperse the same in blower mode, has been asserting
that White violated the patent with its vacuum-blower. The dispute
hinges on a removable air inlet cover, present in both machines. The
cover's primary purpose is to exclude items from reaching the impeller
when the machine is used as a blower; the cover is removed for vacuum
operation. Toro's '528 accounts for the cover in a claim that reads, in
part, "said cover including means for increasing the
pressure...." In the Toro machine this "means" is a restriction
ring that is integral to the cover, while in the White machine the ring
is a separate part.
1998 Toro won a summary judgment of literal infringement against White.
On appeal, the Appeals Court found that literal infringement was not
possible since White's cover clearly did not have the restriction
ring "permanently affixed to and included as part of the
cover". On remand, the District Court issued a summary judgment
that there was no infringement under the doctrine of equivalents.
The District Court held that "a critical function of the
[Toro] air inlet cover...is to automatically insert and remove the
restriction ring" (emphasis added) and White's two piece structure,
failing to provide this function, was not equivalent.
Appeals Court again disagreed with the District Court's summary
judgment. It pointed out that to infringe, an accused device must
include an equivalent for each literally absent claim limitation.
Further, it pointed out unimportant and insubstantial differences don't
count. The Appeals Court clearly felt that a fact finder "might
indeed find..." the separation into two components what the
patentee has claimed as one to be an insubstantial change.
Appeals Court then focused in on the District Court's use of a
function-way-results test ("does substantially the same thing in
substantially the same way to get substantially the same result")
to find no equivalency. This finding was based on the function of
"automatically" placing the restriction ring. The Appeals
Court agreed that the automatic insertion of the ring was mentioned as
being an "advantageous" function in Toro's specification but
the Court strongly stated it was improper to "import into the
claim a function from the specification, particularly when the claim
recites only purely structural limitations."
the Appeals Court found "Neither the '528 patent's specification
nor this court's claim interpretation make the inherent function of
automatic placement a key objective of this invention," thereby
worthy of differentiating White's two part structure. That is, when a
function comes along for the ride its absence cannot be a significant
change. Therefore, the District
Court acted improperly to grant summary judgment for White.
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